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New Policy Toward Co-Existence Agreements In Costa Rica

The Costa Rican Trademark Law does not contemplate any type of regulation regarding trademark coexistence agreements or letters of consent.

Nevertheless, these legal instruments are broadly utilized in the country to avoid or overcome the objections raised by the Trademark Office (TMO) to those trademark applications that pose a conflict with identical or similar registered trademarks.

In the past, the TMO was rather flexible in these cases, which allowed the applicant to comply with an objection on the grounds of a previous trademark, simply by furnishing a coexistence agreement or a letter of consent. However, recently the TMO’s attitude has been more rigid, greatly reducing the effect of such instruments in our country.

As grounds for this shift, the TMO resorts to the interest of consumers, arguing that the trademark law doesn’t only seek to protect the private interest of trademark owners but also intends to protect the collective interest of the consumer population. That is why it has considered that the documents in question would only ensure the non-existence of damages for the trademark owners, leaving open the possibility of confusion that such coexistence might bring about for consumers.

The foregoing undoubtedly generates uncertainty in trademark applicants, especially for those companies accustomed to operating through subsidiaries or sister companies, whose trademarks, in many cases, overlap. For that reason, they will be forces to modify their practices, filing documents in addition to the letter or agreement that help demonstrate to the TMO that the desired coexistence will not be detrimental to consumer interests.

For now, this shift in the TMO’s examination practices hasn’t been clearly laid out on formal guidelines or internal regulations; it has been expressed on the Registry’s office actions and resolutions. This causes uncertainty because the examining entity is not bound to a specific guideline which allows it broad powers of decision when considering these matters. We will have to wait until applicants start appealing before the Tribunal Registral Administrativo so that through its judgments it determines the appropriate way for the TMO to resolve issues regarding coexistence agreements or letters of consent.